11 F. 588 -

11 F1d 588

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Case Text

588

FEDERAL REfORTER.

MERRIAM v. SMrfH and

(Oircuit Oourt, lJ. Massacltusetta. April] 7, 1882.)
1.

PATENT-RIGHTS OF ASSIGNEE.

The mere assignment of a patent would give the assignee no right to damages or profits already accrued; but where the deeds of assignment contain the words" also, any and all claims which I now have or may have against any person or persons by reason of any infringement of the said patent, or any part thereof," the case will be considered as if the assignors were plaintiffs.2. BOTH PARTIES INNOCENT-RULE OF DII,IGENCE.

Where there was no acquiescence on the part of the patentee, nor conscious infringement on the part of the defendants, there was no moral delinquency on either side, or an actual estoppel; and where both parties are innocent, diligence should be required of him whose property is to be protected.
3.

INFRINGEMENT-RELIEF-DAMAGES.

In case of an infringement under such circumstances, an injunction should be granted, and damages which a court of law would give.

In Equity.

Benj. F. Thurston and Fred'k P. Fish, for complainant. Geo.. Roberts cf; Bros., for defendants. LOWELL, C. J. This bill is brought for an injunction and account, upon patent No. 49,349, issued August 8, 1865, to Benjamin U. Lyon, the inventor, and to his assignees and partners, all of Stamford, Connecticut, for an improved machine for forming welts, by means of pressure rollers and guides, combined and operating as shown in the specification and drawings. The inventor and his partners were carriage-makers, and the machine was found useful in forming the leather trimmings used in their business, and it was so used by them for about 16 years. Two or three years after the date of the Lyon patent, one Stimpson introduced a machine for making stay-strips for the seams of boots and shoes. This machine, improved somewhat from an English J::qodel, has gone into very general use, and has become of great value in the important branch of manufacture to which it has been applied. I have no doubt, upon the evidence, that the Lyon machine was new and useful, and that the Stimpson machine, which has been used by the defendants and a great many others, infringes the Lyon patent. Stimpson, and the manufacturers of boots and shoes, were wholly unaware of the existence of this patent; and the patentees were equally ignorant of the Stimpson machine. An interesting question thereupon arises, how far a court of equity

DRRUK t7. SKITH.

589,

should go in decreeing profits for pa.st under very peculiar circumstances. The original owners of the patent never introduced the machine into genera.! use, though they found it of some value in their own business. The plaintiff bought the patent of them for a trifling sum, to strengthen his position in the serious litigation between these parties ooncerning stay-strips for boots and shoes, and the machinery for making and applying them, in which two or three different cases have already been decided in this court. The mere assignment of a patent 'Would give the assignee no right to damages or profits already accrued. Elwood v. Ohristy, 18 C. B. (N. S.) But these deeds a.ll contain the following words: "Also, any and all claims which I now have or' may have against 'any person 'or persons by reason of any infringement of the said patent, or any part 'thereof:' I shall, theref6re, consider the case as if Lyon and his partners were the plaintiffs. A p'ractice has grown up in the circuiteourts of looking upon a patentee's remedies at law and in equity as anllupol1 his right to profits as something which follows necessarily' from the tablishment of his title.' But it has been decided by the Supreme court at this tel'm that a court of equity, is to proceed under the patent law just as it does in any'other case of a violated legltl right, and to grant relief only when the'remedy at law is inadequate. On this principle the decision in that case was that a bill foran' account of profits will not be sustainedU brought after the patent pi:J;e'd, because there can then be no injunction. v. Lake Shor., , etc., Ry. 00.11 FED. REP. 849. note. ., ,. , That decision puts this case 'in the same line with 'cases patents, trade-marks. and copyrights, in Englarld. before the jurisdictions of law and equity were 'blended by the late judicature" act. "Now, however, aJiaction for past infringement of an may be brought in the', chancery division. a.s well as in'any::other, division of 't he high court f?f. justice.... Johns.'Pa.t. Man. 234. The question for me is, what was the ,this 'statute? This question may be answeted in the words of LoM'Brougnim; who declare'll it to be a principle of "that a party a tight sbould not lie by, arid by his silence oracquiescen.ee a'nother ,to go on expending his money and incurring if profit has been made, comeandcla.im a sbarain'that, profit." Or08sley v. Derby GaB'L. 00. 1 Webst.i'Pat. Whis principle was by the' supreme court to 'a'ease, (McLeanv. Fleming, 96 U. S. 245)' in which an injtin:ction :wu

Q1>El\AL REPORTER. . .,

granted l .but no. accpunt,of. profits of the long acquiescence of the plaintiff. To the authorities cited, in learned opinion of Clifford, J., in that .case, may be added Ba'ily v. Taylor, 1 Russ. & M. 73; Parrott v. Palmer, 3 My!. & K. 632. . T4is case differs from all thoseUwhich I have seen in this, that there\vas no acquiescence on the one side nor conscious infringement on the other, as I have already shQwn. It cannot be said, therefore, that there was the slightest moral delinquency on either side, or an actualestoppel. The 'simple inquiry is, whiGh party must suffer for . the delay? .It seems to me clear that the patentees should be left to their action for damages. One ground of the liapility, t() account for profits is that the plaintiff may be supposed to have lost what the defendant by ,infringing the, .patent; but. in this case the. patentees has had no intention of making machines to be used in the manufacture of boots and .shoos. Theywere evidently not aware that they had proAtswhich are now for they sold their patent, it .the deeds express the truth, for .100 and, a license to use the invention iIll their own business. In truth, no interference, a:J;ld the very fact that both sides w:ere in ignorance of this of its infringement, proves' this.' The damages which of .law would give are therefore sufficient for this case. a both,parties were diligence should be required of him has property to be. protected; burden must on him. The his may be constructive notice; but it is to be observed that the Lyon patent purported to apply to It different trade, andthllt the Stimpson machine was not patented, so that no one had to go to the patent.office or make allY inquiries upon the subject. There was, therefore, no want of diligence on the part of the manufacturers; and, as courts of equity look to facts. rather than <lonstructive, or Sl,rbitraty conclusions, when they can do so without interfering with legalright.s, it follows that. the party holding the affirmative, ltSkiug, for ,the interposition of the court to give him profitlil dalllages, must fail. It. does not follow that an injunction should not be granted; that is given, of right, wheJ). istq heviJl.dicated, and there is no Elstoppel, (FuUwood v.Fullwood, L. R. 9 Ch.Div.176;) nor that there s,hould .not be an accqunt the .time notic.e to the defendants Qf the plaintiff's v. Edel8ten,.1 De G., F. & J. 185. Decree for an injunction, and an account· from the date of the bill. or of any earlier notioe to the defendltI;l.ts 'of ,the plaintiff's title.

'GREEN

v.

FRENCH.

lO'iroud Court, D. Ne'UJ Jer8ey. March 28, 1882.)
1.

PATENTS FOR INVENTIONS-IsSUES PRESENTED-PRACTICE.

Where issues have been often presented, and decided in coordinate courts, agreeing in the construction of a particular patent, unless,new features in the case distinguishing it from cases elsewhere adjudicated, ,the decisions of such co-ordinate courts should be accepted 8S filIal until the supreme court has had an opportunity to review and reverse their judgments;

2.

BAME-ANTICIPATION-BURDEN OF PROOF.

The patent being primajaou good, the burden of proof on a question of anticipation is upon the defendant. S. THE DRIVEN WELL. Patent No. 78,425, known as II The Driven-Well Patent," issued' for an improved method of sinking artesian wells, hel4, upon a contlict of" testimony, not anticipated.
4. BAHE-fulISSUE-VALIDITY 01'.

.' ,

Where the validity of a reissue bas been fully considered and alljudicated in other cases, and where, in the unsettled condition of the law, arising from recent decisions, a case involving the]aW is actually pending"on appeal befors-the supreme court, this court will Clxpressing an opjnion.

In Equity.

,

,

' NIXON, D. J. This is a suit in equity, brought against the defendant for the infringement of reissued letters patent No. 4,372, granted to Nelson W. Green, assignor of the complainant, On. May 9/i871,for an "improvement in the methods of constructing ftl'teslan wells." The original patent, No. 73,425, was issued to said Green, January 14, 1868, upon his application therefor, filed May 17, 1866. The patent is popularly as "The Patent," ,and the validity of the reissue has been the of in the circuit COl1rtS of several districts, almost without a parallel in the history of patent litigations. It appears in this case' that the contest began with the suit of Andrews v. Carman, before his honor, Judge Benedict, in the eastern district of New York; Wfl.S continh.ed in the several cases of Andrews v. Wright, before Judges Dillon and Nelson, in the district of Minnesota; of Hinev. Wahl, before Judge Gresham, in the district of Indiana; of Andrew8 v. Cross, bSforeJudgc Blatchford, intbe nortbern district of New York; and of Arujrew8 Creegan, before Judge Wheeler, in the southern district 'of New York'. All these cases resulted' in sustaining the validity of the 'patent, and